JURISDICTIONS FOR FILING PATENT APPLICATIONS IN INDIA

By Garima Rai, Senior Associate

INTRODUCTION

India is a huge country with an area of 3.287 million km² and a large population of approximately 1300 million. That is why many governmental agencies in India work on policy of localization rather than centralization.

Patent office in India is no exception. In India, there are FOUR Patent Offices in FOUR different cities namely, Delhi, Kolkata, Chennai and Mumbai. The Patent Office is headquartered in Kolkata but the Controller General of Patents, Designs and Trademark (CGPDTM) has his office at the Mumbai Location.

WHO CAN FILE IN WHICH JURISDICTION ?

According to Patent Rule 4(1)(i)(a), an Indian applicant can file application for patent at the appropriate Patent Office under whose jurisdiction he normally resides or has his domicile or has a place of business or the place from where the invention actually originated. In case of joint applicants, the jurisdiction will be decided depending on the first applicant among the joint applicants.

Further, according to Patent Rule 4(1)(i)(b), for an applicant, who is non-resident or has no domicile or has no place of business in India, the address for service in India or place of business of his patent agent determines the appropriate patent office where applications for patent can be filed.

For example, if a foreign applicant chooses an Attorney based in Delhi, then the Patent application will be filed at the Delhi Patent Office. Similarly, if the foreign applicant selects an Attorney who has place of business at Chennai, then the patent application will be filed at the Chennai Patent Office.

Although these days, with the introduction of electronic systems, attorneys and firms in one jurisdiction are able to file applications in patent offices located in other jurisdictions. This is very handy strategy for filing applications in certain fields in particular patent offices where there are more chances of favorable issuance by certain patent groups and examiners in those offices. However, many contend that though this strategy works presently, with centralization of examiners and their rotations, the relevance of this strategy will lose significance in coming future.

The functioning of all the four branches of the Patent Office is the same. The territorial jurisdiction for Indian applicants is provided below: